Copyright Considerations for MLS Photographs
There are a number of different ways in which photographs of properties arrive in a Multiple Listing Service ("MLS"). An employee of the MLS can take the photographs used in the MLS, or the MLS Participant (or one of their employees) may take the photographs and provide them to the MLS, or the MLS or a Participant may hire a photographer to take the photographs. The purpose of this article is to address the copyright issues raised by each of these different methods of submitting photographs to the MLS.
Under traditional copyright principles, the photographer owns the copyright for the picture taken by the photographer. Even if the photographer provides the negatives to a third party, there is no automatic authorization to make additional copies of the photograph unless the permission of the photographer has been obtained separately. This is also true with digital cameras, where a file is sent to the MLS. In each instance, it is necessary to evaluate who owns the copyright for the photograph and what is needed to allow the MLS to use that photograph without infringing the copyright owner’s rights.
The first method described above, when an employee of the MLS takes the photograph, is an application of the so-called “Work Made for Hire” principle. Because an employee of the MLS took the photograph in the normal course of their work, the photograph is treated as if the MLS was the photographer. Applying the traditional rule of copyright ownership for photographs, the conclusion is that the MLS is the owner of the copyright and controls the right to reproduce and distribute it. Also, as the owner of the copyright the MLS can use the photograph without violating anyone’s copyright. Although ownership of the copyright would in theory allow the MLS to require members to obtain a license to use the same photograph in a comparative market analysis or advertising for the property, in practice, no MLS is known to actually attempt to impose such a requirement upon its members.
The other two possible source of photographs mentioned above, photographs taken by a MLS Participant or a third party photographer hired by a MLS Participant or the MLS, involve more issues and will be the focus of the rest of this article.
It is common for a MLS to contract with a photographer as an independent contractor to provide photographs for all of the properties in the MLS. This service may be provided as part of the fees paid to the MLS by the Participants. Because the photographer has taken the photographs and the photographer is not an employee, it is presumed the photographer is the owner of the copyright. In this situation, the MLS must obtain as a part of their agreement with the photographer the right to reproduce the photographs. There are two ways in which this can be accomplished. The agreement with the photographer can either: (i) expressly license the Board and/or MLS to use the photographs in certain manners: for example, real estate advertising and MLS services; or (ii) it may transfer all of the rights to the photographs to the MLS. While it might appear obvious to obtain all rights at the outset, this sometimes can be more expensive than just obtaining the specific rights needed, and so cost will occasionally be a factor in how the MLS acts. The potential extra cost can be significantly reduced if the rights to use the photographs are negotiated at the same time the contract to hire the photographer is negotiated. If cost is not a factor or the cost can be eliminated through negotiations, the preferred resolution would be for the board/MLS to obtain all rights for the photographs.
Suggested language for obtaining a license would be something like the following:
In consideration of (Board’s/MLS’s) payment of (photographer's/artist’s/ architect’s) fee for creating, preparing and delivering the (photographs/drawings/ renderings) to (Board/MLS), (Photographer/Artist/Architect) grants to (Board/MLS) and its members a license to use the (photograph/drawing/ rendering) in (Board’s/MLS’s) compilations of properties (current and sold) and in real estate related advertising, business cards, brochures and other promotional materials, including the right to reproduce, create derivative works from, distribute, and publicly display the (photograph/drawing/rendering) in print, on the Internet and otherwise.
In selecting this option, it is important to give careful thought to all of the actual and potential uses of the photographs, so that the rights obtained at the outset are sufficient to cover all intended uses. It is usually not desirable to have to go back and negotiate to get additional rights after the fact.
A clause to accomplish the second option, transferring all rights to the Board, would be a little less complex because it would not have to specify how the photographs might be used. It could say:
Photographer agrees that the photographs shall be deemed to be “works made for hire” with the meaning of the United States Copyright Act and (Board/MLS) shall own all right, title and interest in the photographs, including copyrights, or to the extent the photographs are not deemed to be “works made for hire,” Photographer hereby assigns all right, title and interest, including copyrights, in photographs to (Board/MLS), and agrees to execute any documents which (Board/MLS) may reasonably deem necessary to effect such assignment.
Note that the suggested language includes both a statement that the photograph is a work made for hire and also that the copyright is being assigned. This is a "belt and suspenders” approach to the issue and is used because there is always a potential issue of whether the photographs can be properly categorized as having been made for hire when dealing with an independent contractor. You should note that this provision must always be in writing, as an oral agreement will not be enforceable against the photographer.
Participant Provided Photographer
Another possibility is that the MLS allows its Participants to submit their own photographs of properties. Either all photographs are submitted in this way or some are submitted as a substitute for the MLS’s photographer. The issue remains assuring that the MLS Participant has obtained the necessary reproduction rights for use by the MLS and all other authorized entities. If the Participant or an employee of the Participant has taken the photographs, the Participant will own the copyright to the photographs. All that will be required will be the Participant's representation as discussed below regarding the Participant's rights and authorizing the use of the photographs.
If a third party photographer is used, there are again two options-a license or an assignment of rights-for addressing this issue. The license would be very similar to the one described above. The Participants should be made aware of this issue so that they can properly address it in their agreements. Possible language for a licensing arrangement:
In consideration of (Customer's/Real Estate Professional's) payment of photographer's/artist’s/architect’s) fee for creating, preparing and delivering the (photographs/drawings/renderings) to (Customer/Real Estate Professional), (Photographer/Artist/Architect) grants to (Customer/Real Estate Professional) a license to use the (photograph/drawing/rendering) in (Board’s/MLS’s) compilations of properties (current and sold) and in real estate related advertising, business cards, brochures and other promotional materials, including the right to reproduce, create derivative works from, distribute, and publicly display the (photograph/drawing/rendering) in print, on the Internet and otherwise.
The MLS Participant should also be informed that it is possible to obtain all rights to the photographs. Some MLS Participants may feel this is more appropriate because they believe this, as opposed to a license, is what they have paid for from the photographer. Such a provision could be similar to the following and would have to be in writing as a part of the broker's agreement with the photographer:
Photographer hereby assigns all right, title and interest, including copyrights, in photographs to Customer, and agrees to execute any documents which Customer may reasonably deem necessary to effect such assignment.
The MLS will want to make its members aware of this issue and the steps and language Participants may use to avoid potential liability for themselves and the MLS. In situations where the MLS does receive photos from Participants for publication in the system, it is recommended that an additional provision be made a part of the MLS rules which would indicate that if the MLS Participant submits photographs to the MLS, then the MLS Participant is representing that the Participant has the right to authorize and is authorizing the MLS to publish the photograph anywhere the MLS data is intended to appear. A provision requiring the broker to indemnify the MLS in the event of any litigation relating to the reproduction of the photograph by the MLS or other authorized entities could also be made a part of this provision at the option of the MLS.